Wednesday, February 18, 2009

It Don't Come Easy: TTAB Affirms 2(d) Refusal of "RINGO" for Clothing

Ex-Beatles drummer Ringo Starr paid his dues (the appeal fee) and sang the blues, as the TTAB affirmed a Section 2(d) refusal to register his mark RINGO for various clothing items "all depicting the name and image of a famous entertainer." Despite that limitation and despite the fame of Ringo, the Board found his mark likely to cause confusion with the identical mark registered for men's, women's, and children's clothing. In re Richard Starkey aka Ringo Starr, Serial No. 78821116 (January 27, 2009) [not precedential].

The Board took judicial notice that Applicant is a "famous entertainer who performs under the stage name 'Ringo Starr.'" But that proved to be little help from his friends.

Applicant's counsel argued that the express limitation in the application stating that the goods depict "the name and image of a famous entertainer" served to distinguish the goods and the channels of trade, but the Board heard the beat of a different drummer. It found Ringo's goods to be legally identical or closely related to those of the cited registration. The Registrant's goods were not restricted in any way, and could include clothing depicting the name and image of a famous entertainer. As to trade channels, neither the application or registration contained any restrictions, and so the Board must assume that the goods are marketed in all normal channels of trade for such goods.

Ringo's counsel presented no evidence for the feeble assertion that Ringo's goods "would only be sold in places where rock music fans congregate and purchase special (not ordinary) clothing." Moreover, even if that were true, there was no evidence that Registrant's clothing would not also be sold in "places where rock music fans congregate." [The malt shop? - ed.]

Next, Ringo's counsel lamely claimed that the purchasers of Ringo's goods "are dedicated and therefore knowledgeable fans of applicant and his music ('Ringo-philes') who wish to collect or own merchandise (or clothing) 'commemorating Applicant, his music career and concert tours.'" The Board, however, could not conclude that "'Ringo-philes' would be the only purchasers of the goods at issue here, and that the potential purchasers of the goods would not include ordinary consumers."

As to the marks, the Board observed that they are similar, if not identical, in connotation and commercial impression: both identify and refer to the famous entertainer, Ringo Starr.

Ringo argued that "his fame and renown must be taken into account in [the] likelihood of confusion analysis." He asserted that, "due to his fame, purchasers will automatically understand, prior to purchasing applicant’s goods, that RINGO refers to applicant and that applicant, not registrant, is the source of applicant’s goods."

However, the Board pointed out, Ringo's fame as an entertainer "does not entitle him to register RINGO for goods which are the same as or similar to the goods already covered in registrant's prior registration. Applicant's fame therefore is not a factor in our likelihood of confusion analysis in this case." [The Board pointed out in a footnote that "fame can never weigh against a finding of likelihood of confusion."]

In another footnote, the Board maintained that even if it were to consider Ringo's fame and were to agree that purchasers will understand RINGO to refer to Applicant, there would still be likelihood of confusion in that purchasers of Registrant's clothing would mistakenly believe that Ringo was the source of same. [Reverse confusion, or "noisufnoc" - ed.].

And so, the Board affirmed the 2(d) refusal to register.

Registrant's specimen of use

TTABlog note: Doesn't this case remind you of the TWIGGY case (TTABlogged here), in which Twiggy succeeded on a Section 2(a) false association claim, cancelling TJ Maxx's registration for the mark TWIGGY for clothing. Here, however, Ringo faces a ten-year old registration. Is a Section 2(a) claim still viable?

BTW: Two days after this decision, Mick Jagger got some satisfaction by winning a straightforward Section 2(d) opposition to registration of the mark JAGGER for clothing. (here).

Text Copyright 2009 John L. Welch.


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